Etiket: hande mumcuoğlu

Analysis of Foreign Patent Filings in Turkey, A Promising Economy

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Thanks to its geographical location, Turkey has the privilege of enjoying various advantages compared to its neighbors and has maintained its attractive position through centuries of being the home of many civilizations and as a connecting bridge between the main continents providing easy access to remote markets. Roots on the Asia harmonized with the motivation to keep up with the fast growing allure of the West, Turkey seems to prove the promising elevation thanks to the policies adopted.

 

With a population of almost 80 million, Turkey has a highly promising and growing economy within Europe, and continues to be one of the center of attraction for foreign investors. According to data disclosed by the Prime Ministry Office of Public Diplomacy of the Turkish Republic, the amount of foreign investment Turkey received between 2005 and 2014 alone was $144 billion compared to corresponding data from 2002, which was nine times less than the recent value.

 

In line with the strategic studies followed with the target deadline of 2023, Turkey is motivated to pave the way for a prospering future to be achieved. International investment is one of the core focuses to achieving that goal. The recent approach of the administrative institutions has been to achieve a friendly investment environment for foreigners and to enable local procedures to be as convenient as possible. Examples include reduced local procedures for establishing a company (down from 38 days to six days), equal treatment of national and international investors as secured by related laws, and so on. This may well be interpreted as a positive effect of the long lasting negotiations for the accession to EU where the regulations and laws have been liberated comprehensively. However, it is a total different topic to be discussed as to what extent, and whether the said can be achieved compared to what is served on the table by EU.

 

Looking at the data

The chart overleaf (Fig. 1) has been generated using data obtained from the Republic of Turkey Prime Ministry Investment Support and Promotion Agency (www.invest.gov.tr). It summarizes practical details as to Turkey’s level of competitiveness in different aspects compared to its neighbors.

 

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To translate the above overall present situation in terms of levels of competitiveness and the outcome of the transparent investing environment in Turkey into numbers, the data in Fig. 2 overleaf has been gathered from the Central Bank of Turkey and Ministry of Economy and grouped per year. It will be referred to in order to further address the growing interest and investment of international firms in Turkey.

 

According to the 2013 statistics, all that is available so far through the publication dated June 25, 2015, of the Turkish Statistical Institute under no. 18858, regarding the Foreign Controlled Enterprises, “the production value of full enumerated part of Annual Industry and Service Statistics ( AISS), the Foreign Control Rates (FCR) in 2013 was 13.4%” and German, American and French enterprises controlled 2.3%, 1.8% and 1.5% of the total production respectively”.

 

Intellectual Property Rights

To nominate Turkey as one of the attractive countries for foreign investment, the question is further to be raised as to whether it is a convenient ground for the protection of intellectual property rights. This being one of the critical assets companies create after investing in a foreign country.

 

Referring to the data available as of February 17, 2015 at the Turkish Patent Institute’s (TPI) official website (http://www.tpe.gov.tr/TurkPatentEnstitusu/statistics), in line with the Statistical Classification of Economic Activities in the European Community ( NACE Rev 1.1), the inventions for which protection was sought by foreign filers in Turkey belongs to the following main industries listed in Fig. 3 overleaf:

 

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Based on the data provided by the Information, Documentation and IT Department of the TPI, breakdown of the routes that filers use to get protection in Turkey is given in the chart opposite (Fig. 4). It provides statistical information from local patent registry covering 2010 to 2015.

 

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The registry records of 2010-2015 for patent applications filed by foreign firms show that 37,260 cases out of a total of 38,768 sought patent protection through validation of European Patents in Turkey. The number of national phase entries for Patent Cooperation Treaty (PCT) applications in the same period is 877 cases, while the national patent applications as filed by foreign firms remains at the a limited case number of 631.

 

Regarding the origin of the foreign companies opting for validation of European Patents the largest group are based in Germany (9,494 cases), followed by the US (6,014 cases), and then Switzerland (3,194 cases), Italy (2,921 cases), France (2,765 cases) and the UK (1,357 cases). For national phase entries, the US tops the list with 202 applications, while China (151 cases), Japan (111 cases), Korea (100 cases), Germany (41 cases) and the Russian Federation (32 cases) are among the top countries to prefer to use the international patent system to protect inventions in Turkey. The national patent applications, reaching a total number of 631 files between 2010 and 2015, are again mirroring the leading presence of US and Germany respectively while Asian firms may well be listed as the following countries with noticeable numbers. Still, the recent numbers for 2015 even reflects a change of attitude of Asian firms who also start to prefer the regional path towards the protection of the inventions in Turkey.

 

It is of course not surprising to note that Germany and the US are the two leading top patent filers in Turkey. This is a reflection of the presence of German and US firms in Turkey, their market share, and the investment directed from those countries. And, in parallel, they expand the protection of their inventions into Turkey via validation of European Patents as these countries are among the top patent filers before the European Patent Office too.

 

National Turkish Patents

Still, for international firms to prefer to file national patent applications, is the granting system for inventions in Turkey actually friendly and promising?

 

The granting system for inventions are regulated under the provisions of Decree Law No. 551 and Regulations pertaining to the protection of inventions as in force as of June 27, 1995. The current decree law and the respective regulation in relation to the implementation of the said was put into force to achieve practical solutions that reflect the corresponding international treaties, regarding the protection of inventions. In 2012 a draft was promulgated for a smoother adoption of European regulations. This was followed by inevitable arguments and discussions in relation to the coherency of the revisions and whether the proposals could realistically be put in practice by the TPI once the technical background and the capacity of the patent examiners was considered. The related patent draft has not yet been come into force.

 

Therefore, the current practice will be summarized stating that inventions are protected under three main types to be listed respectively as follows:

  • patent with examination (term of protection is 20 years)
  • patent without examination (term of protection seven years)
  • utility model certificates (term of protection is 10 years)

 

Where a term of protection of 20 years under patent with examination is sought, the applicants are notified with an official notification once due formal examination is completed. Where an official search as to novelty is to be requested that should be filed within 15 months, either as of the actual date of filing or the date of priority if claimed. Once the search report is conducted and notified, the applicant has the right to select a system either for a patent with or without examination.

 

If a system for a patent without an examination is requested by the applicant, the next step will be the publication stage. This is followed by a notification as to the decision of grant.

 

For a patent with examination to seek a term of protection of 20 years, the applicant is to proceed with a request for examination, while an official request for an examination to be carried out is limited to three examination reports. That is, if the final and third examination report is not affirmative as to the patentability of the claimed invention, the application will then be rejected and the applicant has a further right to file counter arguments against the said decision before the respective Specialized IP Court in Ankara.

 

A Utility Model Certificate on the other hand may well be nominated as the smoothest, yet weakest, type of protection for inventions considering the administrative steps, yet the capacity of enforcement. The procedure may well be summarized to include an initial filing proceeded by a publication to be finalized with a notification of decision of grant. The respective type of protection is granted where no technical search and examination are carried out. This leaves the rights owner vulnerable to third party arguments on the patentability of the claimed and protected invention.

 

Translation and Search/Examination

Turkey is not a party to the London Agreement regarding translation requirements of granted European Patents during national validation stages. Even so, the European Patents option is more practical than local practices that have to be followed for either local patent applications or national phase entries for International Patent Applications (PCT). Basic translation requirements along with due costs to occur, during local procedures, the period either from national filing or national phase entry to a possible stage of grant will literally be time consuming.

 

For PCT applications where the IPRP is available at the time of national phase entry, further local procedures are still friendly, since a notice of decision of grant will be notified if the respective IPRP is affirmative as to the patentability of the claimed invention, since TPI does not further proceed with a local examination. On the contrary, where the international search report is available during national phase entry, the applicants are to proceed with an examination to be carried (as limited to three as stated above) and the local procedures may last longer than projected. Indeed, one of the reasons for delays is the current practice of the TPI, whereby applicants are requested to select search/examination offices authorized to act on behalf of the TPI as subsidiary offices.

 

Due to the limited technical capacity of the related department of the TPI, once a local patent or a national phase application is filed, applicants are notified by the TPI as to whether the related technical field of the claimed invention falls within the scope of fields to be searched and examined by the patent examiners of TPI. Where it does not, the offices notified to be selected are the European Patent Office (for search only), Russian Patent Office, Danish Patent Office, Swedish Patent Office and Austrian Patent Office. Inevitable delays are experienced due to the cooperation between the selected authority and the TPI covering communication of the request, sequence of operations, and the deadlines to be followed for the issuance and notification of the reports by the selected authority to the TPI and then on to the applicant by the TPI, etc.

 

As a sign of a promising change, thanks to the dedicated work of the Turkish Patent Institute, the related procedures have evolved into a scheme whereby the number of patent applications searched and examined by local patent examiners has climbed to 45% in 2014. A big improvement considering only 9% in 2009 were searched and examined by local examiners. Recently, TPI declared that the corresponding rates are increased by 32% to reach to a total file number of 1,038, meanwhile all due related procedures are planned to be attended locally by TPI by 2016.

 

Conclusion

Under current practice, and the alternative types of protection available, the approach and the preferences of the filers varies depending on their priorities. It could be either to achieve a type of protection and to delay concerns regarding possible third party attacks to an unknown future, or to start to struggle during the administrative stages before TPI to seek a term of protection with shields of criteria of patentability affirmed.

 

Looking back again at the portfolio of foreign filers, the current statistics available in the TPI’s registry records show that the regional path via validation of a granted European Patent is the most preferred route to protecting inventions in Turkey. As of 2000, when Turkey became a member of the European Patent Convention, there has been a remarkable increase in organizations using this method and a subsequent decrease in the numbers of patent applications recorded at the local registry for national phase entries.

 

We assume that the leading position of the regional path into Turkey through validation of European Patents will prevail, depending on i) the concentration of the foreign filers coming mainly from major European countries and the US and ii) the adaptation to the new Unitary Patent era, which offers advantages yet also brings the need to put in place practical strategies for gaining IP protection in non-EU countries.

 

Hande Mumcuoğlu

Trademark & Patent Attorney

mumcuogluhande@gmail.com

This Article first published and circulated at The AIPPI World Congress 2015 in The Patent Lawyer Magazine, of CTC Legal Media.

 

A New Chapter of IP in Turkey: Green Light for Trademark Owners to Co-exist

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The need for a comprehensive revision of the Decree Laws as implemented through the protection of Intellectual Property Rights in Turkey has been an ongoing issue, and the chapters of this long journey so far have failed to pave the promising setting, with repeated terms of anti-climax in return.

 

The IP community in Turkey has been trying to speak out on behalf of the local and international firms to invest into Turkey, who have concerns of trust that prevail against the IP system, both in terms of practice on the administrative level and further through enforcing the rights as granted. Furthermore, practical attitudes and strategies have been generated to adjust to the environment in Turkey to achieve best solutions, with less risks.

 

Indeed, this has not been the quest only for the IP community, and the need for a substantial change has well been acknowledged and concentrated on senior administrative levels of TPI (Turkish Patent Institute) too. Since 2002, though not systematical and periodical, certain drafts have been discussed to signal the need to revise key articles of the decree laws. It is to be admitted that the political strategies adopted through the negotiations for accession to European Union shadows on different fields of society and the need for the transition of protection of IP has become top issues to be consolidated.

 

On a professional approach, we may argue that some earlier intentions to revise drafts with no solid ground arrived in relation to protection of IP – lessons learned– the feedback received from counter partners with whom TPI organizes frequent workshops and the case based topics as to drawbacks of the implementing regulations as addressed by the IP community at every possible grounds of discussion, all provide boost for this gradual change.

 

Though particulars of the new draft law deserves a detailed analyses through further articles, the outline for the readers of this article is set out to mainly refer to the key option for the applicants to benefit through registration of  trademarks, i.e the option to co-exist if mutually agreed on.

 

Before moving to the details of this long awaited option soon to be practiced, key revisions of the new draft law worth nothing may be, but not limited to, the following:

  • Co-Existence: This deserves to be listed as one of the top promises of the new draft Co-existence agreements will be accepted to be practical tools against rejection of a trademark application based on absolute grounds, due to earlier trademark application/ registrations cited with identical/confusingly similar description and class details.
  • Publication Period: Once ex-officio examination is completed and affirmed to be applicable for registration, the said is published within the monthly official trademark bulletin, and the said term of publication has even recently been started to be The updated term of publication is now two months, which may well be interpreted to reach an assumption that the formalities through ex-officio examination of trademark applications are now faster compared to earlier practice of the related department of TPI. Though each case has its own transaction history, in some recent cases, notice of publications have been experienced to be notified even within within 15 days as of actual date of filing.
    • Term of Opposition: Time to involve from filing to registration stage will be shorter thanks to the revised terms of oppositions to be filed against cited publications, to be limited to two months while the current practice enables interested third parties to attend to due action item within three
    • Renewal per Class: Registered holders of trademarks may select classes at renewal stage where no such option is available through current practice (i.e the option to renew partially)
    • Serious Use to be Proved: Per applicant’s request, the application of whom is contested during the publication period and the opponents who argue on registered earlier rights (at least for five years), are to prove serious use of the products/services which enjoy the right of protection and grounded as bases of opposition. This very article within the new draft law is another new requirement for opponents to consider and to satisfy while it may well be argued that the actual practice and frame of it will better be digested and acted upon through the course of related procedures, sure to be tailored individually per each particular
    • Term of Distinctiveness: Deliberate reference is made to “distinctiveness” as a key concern to be satisfied during examination on absolute

 

The Critical Aspect of Co-existence agreements and Importance Attached

The Article 7/a (b) of Current Decree Law No. 556 in relation to protection of trademarks has been in the center of a series of discussions, as it sets the practice of Turkish Patent Institute (TPI) in relation to examination of trademark applications on absolute grounds. For an insight to be provided, the said Article is to be cited to read as follows:

 

Absolute Grounds for Refusal for Registry of a Trademark Article 7/1(b)

The following signs shall not be registered as a trademark:

  1. b) Trademarks identical or confusingly similar with a trademark registered earlier, or with an earlier date of application for registration in respect of an identical or same type of product or

 

Upon receipt of an official request to seek protection for a trademark application, the examiners of Trademark Department of TPI conduct an examination on absolute grounds where the trademark application as filed is subject to the provisions and implementing regulations as defined under Article 7. This very article is considered to be a formal ground for “public interest” to be protected, which is interpreted to be defined particularly under Article No.7/1(b), and discussed to be further supported through a legal ground as defined under the provision of the Article No. 35 of the Constitution. The respective article of the constitution priorities “public interest” where a right to a property may be limited or restricted if/when necessary, i.e “when in conflict with public interest”. The meaning to be attached to “public interest” is still not that narrow to be biased on a negative obligation criteria only, as it engages with the positive obligation to protect the rights conferred against third parties, too.

 

Centralized on the positive obligation on the logic behind this respective article of the constitution, Turkish Patent Institute consolidates the provisions of the said, and trademark applications as examined on absolute grounds are rejected for registered rights in a sense for “public interest” to prevail against third party applications, with confusingly similar nature and to prevent intended registration for/to protect the registered holder. The principle of uniqueness.

 

The Right Conferred through Application/Registration is in Public Domain to be Protected Ex-Officio?

The scope of the right of the holders of registered rights are defined

under Article No. 9 of Decree Law No. 556 and the rights conferred are at the disposal of the registered holders per their preferences, which are expected to be customized through the filter of the contemporary rules of world of business, commerce and trade and the actual setting of the environment where trademarks are to function in parallel to the mission associated.

 

Since this very article outlines the tools the registered holders may apply, it is obvious that the said are all within the discretion of the right owner. Then the question arrives to the idea behind the motivation of relocating the issue of “protection of public interest” and how it turns out to be translated to cover, to secure the interests of the registered holders.

 

Different attributions are available among the IP community in Turkey discussing whether the current practice of TPI is subjective, extends the logic of examination on absolute grounds (to reside mainly on the criteria to be satisfied for a description to be nominated as proper and distinctive), imitates to supervise the earlier rights (which are argued not to be associated with arguments on relative grounds) or not.

 

This so-called or discussed subjective approach, where the interest of the applicants/holders (tagged as public in the sense of Article 7/1(b)) prevails in the new draft law and examination on absolute grounds, will be carried out based on the earlier rights at the local registry. In that sense, although a certain population of IP community cited to be against this practice and consider the said to be outdated once compared to the practice of various IP authorities in different countries, there is still a considerable level of attitude to favor this approach for the trademark applicants/holders rights to be protected through preventing third party applications with confusingly similar nature at the administrative level.

 

Still, what the majority of the IP community in Turkey agree and appreciate is the introduction of co-existence agreements to be accepted by TPI, who has acknowledged the necessity to respect and adopt the contemporary rules of business, where (and if) the brand owners are willing to cooperate with third parties to expand the terms and potential of the business to be generated, while enjoying the exclusive rights granted.

 

Compared to earlier drafts, with an attempt to revise and foster the practice of protection of IP rights in Turkey, this very recent draft law has already been submitted to the Parliament and we hope the law to be accepted and be in force by the end of 2016. All these recent activities in a general sense have also been supported and co-operated with the Ministry of Science, Industry and Technology of Turkey. Sure, a new chapter is soon to be introduced and the practice of the revised articles may come along with minor adversities, yet the vision behind deserves to be appreciated as the key provisions, either revised or introduced, are intended to be evocative of contemporary regulation of leading IP offices in foreign countries and down to earth grounds for registered trademark will be provided to function at the discretion of their holders.

 

Hande Mumcuoğlu

Trademark & Patent Attorney

mumcuogluhande@gmail.com

 

This article was first published and circulated in the INTA, Orlando Issue 3 2016 of The Trademark Lawyer Magazine http://edition.pagesuite-professional.co.uk//launch.aspx?pbid=8f450367-5863-4898-9c66-eb82480402b1&pnum=53